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Monday, 24 September 2007

Last week the IPKat briefly recorded the decision of the European Court of Justice in Case C-193/06 PSociété des Produits Nestlé SA v OHIM, Quick restaurants SA. Said the Kat, it looks fascinating in the original French and seems to be something to do with QUICKY and QUICKIES, so he guessed that was probably an opposition. The IPKat has since heard from his learned linguaphile friend Tibor Gold, who writes:

"This is an appeal from the CFI in case T-74/04. Its main interest lies in the rules for comparison of a composite word-and-device mark with a word mark.

The applicant's mark was for the word QUICKY with a drawing of a fairly large rabbit atop. The words and graphics were of, roughly, equal size. The opponent's marks were QUICKIES and QUICK; the goods - in classes 29, 30 and 32 for the one mark and 29, 30 and 42 for the other) were deemed similar below and did not play a substantial role in the ECJ judgment.

The opposition had been upheld by the Opposition Division, the Board of Appeal and the Court of First Instance (CFI). It is the latter's logic that was successfully attacked before the ECJ.

The CFI went about it in this way. While paying lip-service to the global assessment test at the outset of its analysis, it then stated that there is a likelihood of confusion (LOC) where a complex mark, leaving aside the figurative element, has a verbal element which is identical or similar to an earlier word mark unless that word element is subsidiary to the non-verbal element. Once such a similarity between the verbal element is established, the next step, said the CFI, is to examine whether the additional figurative/graphic element is capable of imparting a sufficient visual differentiation to overcome the position established by the word elements, i.e. whether the additional figurative/graphic element is a dominant element of the composite in the mind of the public or whether its distinctinctiveness is equal to or lower than that of the verbal element.

In the actual case, the CFI said that the verbal elements were visually similar and the graphics were not so dominant as to render the verbal element negligible. The ECJ condemned this approach. By stating that the graphics did not render the word element negligible, since the compared word elements were held to be similar the CFI did not in fact perform a global assessment but decided the LOC only on the basis of the word elements.

The ECJ referred to its own decision in the recent Shaker/Limoncello case, C-334/05P, 12/06/07 [see IPKat posting here], saying that it is only when all other components of a complex mark are negligible that it is permissible to make the comparison on the basis of the dominant element - a finding that in this case the CFI did not make.

The case was remitted to the CFI."

Says the IPKat, this approach would seem to be of high relevance to the discussions raging in Germany and in Ipkatland over the recent German decision involving the Kinder trade mark (see earlier post here and comments appended to it).

2 comments:

Anonymous
said...

In my opinion the CFI started to go off the global assessment rails with the Limoncello case. Readers may also like to take a look at T-363/04 (to do with two Olive Oil marks having (in English at least)two distinctive and different verbal elements. I think this case shares the same flawed analysis.

I am not sure the correct legal assessment will make any difference, especially if you consider the ECJ's doctrine of "independent distinctive role" established in the Medion/ Thomson case. The outcome will probably be the same.

I think the quality of Nestlé's arguments is more noteworthy, e.g. that the QUICKY rabbit is a "character", and that it is not to be used as a "product" mark, i.e. to distinguish products from those of competitors, and that therefore there can be no likelihood of confusion...